A judgment of the Intellectual Property Court earlier this year carries a stark lesson: from sole traders to multinationals, everyone in business needs to take responsibility, and do their research, to ensure they are free to use their business name, writes Albright IP patent attorney, Frederick Noble.
The case concerns two businesses, both selling Chinese food. Beyond that, the two could hardly be more different. “China Tang” is a Cantonese restaurant at the Dorchester Hotel in Park Lane, London. It is presumably not cheap. China Tang count among their clientele, apparently, Kate Moss, Tony Blair and Naomi Campbell. The other China Tang is (or was until recently) a Chinese takeaway in Barrow-in-Furness. There is a set menu for less than ten pounds a person, which was “not, it seems, ever served to Ms Moss, Sir Tony or Ms Campbell”.
The problem for the second China Tang was of course that the one in the Dorchester had a registered trade mark. Perhaps not surprisingly, the China Tang in Barrow flew beneath the radar for a while. But eventually when it came to their notice, the posher restaurant, armed with their trade mark registration, complained.
There was no allegation that there was any copying, or any deliberate aspect to the infringement at all. It seems to have been implicitly accepted by everyone involved that the second China Tang did not know about the first when the name was chosen.
In that context the proprietors of the cheaper China Tang pleaded a defence of “honest concurrent use”. This is a rarely-successful defence to trade mark infringement, and it did not work for China Tang number two either. Simply, they should have carried out a trade mark search to clear the name before they opened. A small business they may have been, but the trade mark register can be searched online, for free, and quite easily.
Don’t get caught out. Contact us today to discuss how to find a brand which you can use lawfully and also protect as your own.
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